What Is A Design Worth?

Most people are aware, at least in a 'big picture' sense, what patents and trade marks are all about. Trade marks are there to tell you whether the product or service you are buying is 'genuine'. Patents allow an invention to be 'owned' by the person or people who invented it, so others can't copy the idea.

But what of design registrations? They protect the 2D or 3D appearance of many objects, but their scope is quite narrow. Design protection does not travel far beyond the exact shape or pattern that is registered. This means it often seems that the protection of the whole 'concept' that a patent provides is a far more useful way to spend one's IP protection dollars.

Alternatively, the ability to protect against the use of an image or shape that may not be identical, but may simply be confusingly similar, to one's distinctive product, makes trade mark protection seem the better option for IP protection of patterns and shapes.

However, a recent decision of a U.S. jury in the Apple v Samsung battle (U.S. District Court, Northern District of California; Apple Inc v. Samsung Electronics Co Ltd et al, No. 11-1846) reminds us of the value that a well-chosen design registration can have. In this case, the jury awarded Apple total damages of USD 1.05 Billion, based on the infringement of a number of Apple patent and designs, and on 'trade dress' infringement, by 28 different Samsung products.

Although the jury didn't spell out precise reasons for each of the damages amounts, it is interesting to look at which products attracted the biggest payouts. For example, the Galaxy Tab 10.1 WiFi PC, which infringed some patents but not any designs, attracted damages of USD 833,076 from 1.2 million units sold. By contrast, the Fascinate smartphone, which infringed a number of designs as well, attracted damages of USD 143,539,179 from 1.4 million units sold.

That seems to indicate that Samsung's design infringement was viewed as somewhat more serious than their patent infringement for these products. Perhaps this is not surprising for products whose sales are driven by design and 'coolness'.

Perhaps designs can hold their own in an IP strategy after all?

by Adam Hyland